Previously, we explored the merits of the summary judgment as a responsive pleading to a Complaint in trademark and copyright lawsuits. Let’s look at the other side of the coin. Why would you not file a summary judgment and instead opt for a rule 12b6 motion? I think the main reason is if you have a client that is reticent about discovery. However, even if that is the case, I could argue summary judgment is the way to go because a rule 56d request is tough and the plaintiff does not have a lot of time to put together such a motion.
Rule 56d provides in part that “if the non-moving party shows by declaration that, for specified reasons, it cannot present facts essential to justify its opposition, the court may: defer considering the motion or deny it; allow time to take discovery; or issue any other appropriate order.”
Notice that discovery under rule 56d is not mandatory. The requesting party must show: that it has set forth in affidavit form the specific facts it hopes to elicit from further discovery; the facts sought exist and the sought after facts are essential to oppose summary judgment. Grant v. Unifund CCR Partners, 842 F.Supp.2d 1234, 1242 (C.D.Cal.2012) (citing State of Cal. v. Campbell, 138 F.3d 772, 779 (9th Cir.1998). This is a pretty tough hurdle to overcome on a legally deficient complaint. Even if discovery is allowed, it is likely to be very narrow and eliminate much of the typical motion to compel practice.
Finally, even if you lose your summary judgment, you can file subsequent summary judgments in federal court as long as it is on other dispositive issues. So you have backup options later on unlike summary judgment practice in the State of California court system. Also, you could bring your 12b6 motion later on as a 12c motion as long as you remember to plead failure to state a claim as an affirmative defense.
As an intellectual property litigator, I have found the summary judgment tactic preferable to 12b6 on trademark and copyright cases. In the trademark realm, it can be very difficult for plaintiffs to establish likelihood of confusion so early on. You can also win by deploying the nominative use defense. For copyright, you typically need to get at the evidence of the competing works, and as such, a 12b6 can present difficulties. For this reason, a summary judgment is often preferable.
Next time you are defending a case in federal court and wondering how to respond out of the gates, consider the summary judgment. The big negative would be that you open yourself up to discovery. However, if you and your client are 100% solid on the facts and the summary judgment issue is narrow, discovery should be kept pretty tight by the Court. All in all, I think the advantages far outweigh the disadvantages in most circumstances. That being said, remember there is no one size fits all. The summary judgment requires thoughtful analysis and should never be deployed as a reflexive tactic.